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In this post, Rachel Free (Partner), Toby Sears (Partner) and Omri Shirion (Associate) of the CMS Intellectual Property team, preview the UK Supreme Court’s upcoming hearing of Thaler v Comptroller-General of Patents, Designs and Trade Marks. This case concerns the treatment under the Patents Act 1977 (the “1977 Act”) of inventions created by artificial intelligence (“AI”) machines in the absence of a human inventor.

The Appellant, Dr Stephen Thaler, previously appealed a decision of the UK Intellectual Property Office (“UKIPO”) that two UK patent applications should be deemed withdrawn because they named an AI machine, ‘DABUS,’ as the inventor. This decision was upheld by the High Court and subsequently by the Court of Appeal. Dr Thaler’s main argument was that DABUS should be named as an inventor, and that he, as the owner of the AI machine, should be able to apply for a patent on behalf of DABUS through the common law doctrine of accession. This argument was rejected by the Court of Appeal in [2021] EWCA Civ 1374. Dr Thaler has appealed the Court of Appeal decision to the Supreme Court, with a hearing date of 2 March 2023.

Background

The patent applications which are the subject of the appeal are GB1816909.4 and GB1818161.0 (concerning a food/beverage container and a light beacon respectively). No substantive issues were raised by the UKIPO with respect to the content of the patent applications (i.e. the inventions were presumed patentable). Section 13(2) of the 1977 Act requires a patent applicant to file at the UKIPO a statement identifying the ‘person or persons’ whom they believe is the ‘inventor or inventors’ of the invention which is the subject of the patent application. Where the applicant is not the same person as the inventor, they must also indicate the derivation of their right to be granted the patent. Ordinarily, this procedural requirement is not a challenge for patent applicants. However, as in this instance the inventions were created by an AI machine (rather than a natural person), the applications were filed in the name of the Appellant, alongside statements of inventorship explaining that DABUS, the AI machine, was considered to be the inventor and that the Appellant, as the owner of DABUS, derived the right to be granted the patents through the common law doctrine of accession. This raised the issue of whether such a machine could qualify as an ‘inventor’ for the purpose of Section 13(2) of the 1977 Act. It is worth also noting that the Appellant has litigated this issue (although with limited success) in various jurisdictions, including in Germany, at the European Patent Office (“EPO”), the United States, New Zealand, Taiwan, India, South Korea, Israel and Australia.

The UKIPO decided that DABUS could not be named as an inventor as only a natural person could be an inventor. It also stated that there is no valid chain of title from DABUS to the Appellant. This reasoning was subsequently upheld by both the High Court and the Court of Appeal.

The Appellant’s arguments

The Appellant has appealed the Court of Appeal’s decision on three bases:

  1. That he is entitled to be granted patents for inventions created by DABUS. More generally, the owner of an AI machine is entitled to inventions generated by that machine and therefore to the grant of patents for those inventions, where they are patentable;
  2. Section 13(2) of the 1977 Act does not require an applicant to name a natural person as an inventor; and
  3. The Appellant had therefore satisfied Section 13(2) of the 1977 Act.

With respect to the first ground, the Appellant argues that there is a property right in an invention, which is distinct from the property right in a patent or patent application. The Appellant concurs with Birss LJ’s view in the Court of Appeal decision that the property right in an invention arises at the time the invention is created. Dr Thaler also submits that the right to be granted a patent differs from the right to an invention; from the right to an invention, one derives at least the right to the potential grant of a patent.

Given that the 1977 Act creates property in an invention and the Appellant owns DABUS, the Appellant submits that he is entitled to the patents via the common law doctrine of accession. In addition, Dr Thaler argues that first possession is widely recognised as a basis for ownership of unowned property and that he was the first rightful possessor of the inventions. As a result, he is entitled to the property rights in the inventions. Finally, the Appellant argues that if there is no proprietor of an invention created by an AI machine, then the owner of that machine would be unable to prevent the grant of a patent to a third person who illegitimately files a patent application for that invention.

As relates to the second ground, the Appellant argues that even if the 1977 Act requires a human inventor to be disclosed, this is not a substantive requirement concerning the patentability of an invention; Section 13(2) of the 1977 Act being a procedural requirement only. Moreover, the wording of the European Patent Convention (“EPC”) does not distinguish between human and non-human inventors, and EPO caselaw has previously established that AI-generated inventions are patentable. The Appellant submits that the UK is bound by the EPC and the substantive sections of the 1977 Act are framed to have, as far as possible, the same effects as the EPC.

Finally, the Appellant’s third argument is that Section 13 of the 1977 Act requires only the belief that a person is an inventor, and even if an AI machine cannot be designated an inventor, the UKIPO is not granted the power to investigate this by the 1977 Act. The Appellant also submits that Section 13(2) of the 1977 Act does not require proof of a patent applicant’s entitlement and similarly, that the UKIPO also cannot investigate this.

Preview of potential outcomes

As was stressed by Birss LJ in the Court of Appeal decision under appeal, although this case appears to be about whether AI machines can make patentable inventions, it in fact relates to determining the correct way for the UKIPO to process patent applications where the invention has been created by an AI machine. In fact, whether the inventions created by DABUS were patentable is not a disputed issue, there being no substantive issues with the patent applications.

However, the Supreme Court’s decision may still have far-reaching consequences for the protections available for AI-created inventions in the UK. If the Court of Appeal’s decision is upheld, then it would be unclear how AI-created inventions could be protected with patents in the UK (i.e. if neither the AI, nor its human owner can be named the ‘inventor’ and one must be named in a patent application). On the other hand, the appeal may be successful, with the human owner of DABUS being the first owner of the inventions and deriving the right to the grant of a patent for the AI-created inventions. This would provide greater certainty of legal protection for AI-created inventions and would encourage investment and innovation in this technological space. No matter which outcome is reached, a reasoned decision from the Supreme Court will be extremely useful to guide development of the law in the nascent field of generative AI tools.